IP Law and the Capacity To Take a Joke
Dean Rodney A. Smolla, Delaware Law School, Widener University
June 24, 2016
Louis Vuitton can’t take a joke. That was the view of Judge Jesse Furman of the United States District Court for the Southern District of New York in a decision earlier this year involving a trademark and copyright infringement action brought by Louis Vuitton against My Other Bag, Inc.1 My Other Bag sells – well, “My Other Bags.” As the court explained, these are relatively inexpensive canvas tote bags with the text “My Other Bag...” on one side and drawings meant to evoke iconic handbags by luxury designers, such as Louis Vuitton, Chanel, and Fendi, on the other.2 The court’s opinion was generous enough to include color illustrations of the Louis Vuitton and My Other Bag products:
Fig. A.—Louis Vuitton Toile Monogram
Fig. B.—Louis Vuitton SPEEDY® Toile Monogram
Fig. C.—My Other Bag’s Zoey—Tonal Brown Tote (Front)
The idea for My Other Bag was drawn from novelty bumper stickers reciting “my other car.” As Judge Furman explained: “The ‘my other car’ bumper stickers are, of course, a joke – a riff, if you will, on wealth, luxury brands, and the social expectations of who would be driving luxury and non-luxury cars.”3 My Other Bags are essentially a variation on the same joke with the punch line hitting the likes of Louis Vutton or Fendi instead of the likes of Mercedes Benz or Jaguar. Perhaps, the court suggested, Louis Vuitton just did not know about the “my other car” trope.4 Or, the court suggested, “maybe it just cannot take a joke.”5
In rejecting Louis Vuitton’s trademark dilution claim, the court applied a section of the federal statute dealing specifically with parody and critique. The section reads:
Any fair use ... of a famous mark by another person other than as a designation of source for the person’s own goods or services, including use in connection with ... identifying and parodying, criticizing, or commenting upon the famous mark owner or the goods or services of the famous mark owner.6
In reaching the judgment that the My Other Bag totes qualified as parodies of Louis Vuitton, the court was confronted with a prior decision from the Southern District of New York also involving an alleged trademark infringement of the Louis Vuitton mark, Louis Vuitton Malletier, S.A. v. Hyundai Motor Am.7 Hyundai had run a 30-second commercial entitled “Luxury,” which included “a four-second scene of an inner-city basketball game played on a lavish marble court with a gold hoop.”8 The scene also included a basketball bearing marks meant to evoke the Louis Vuitton Toile Monogram. However, there was testimony in the case by a Hyundai representative that the car company did not intend for the commercial to make any statement about Louis Vuitton at all. That testimony, it turns out, was a mistake, for it is difficult to make the case that one is engaged in a parody of another product when one claims to have intended to say nothing at all about that product.
In contrast, as Judge Furman recognized, the My Other Bag motif was in a large sense all about poking and jibing the likes of Louis Vuitton. As the judge put it:
The quip “My Other Bag ... is a Louis Vuitton,” printed on a workhorse canvas bag, derives its humor from a constellation of features – including the features of the canvas bag itself, society’s larger obsession with status symbols, and the meticulously promoted image of expensive taste (or showy status) that Louis Vuitton handbags have, to many, come to symbolize.9
The court went on to similarly reject Louis Vuitton’s trademark blurring, trademark infringement, and copyright infringement claims, all for essentially the same reason. The court explained, for example, that its decision on trademark fair use effectively required the same judgment regarding copyright fair use.
Distilled, the opinion of the court, which I find entirely persuasive, was based on the notion that Louis Vuitton just needed to chill and lighten up. By its own description, as the court noted, Louis Vuitton was an aggressive enforcer of its trademark rights. And when fighting knock-offs and pirates, more power to it. But when dealing with parody, it is better to accept the implied compliment, as Judge Furman observed, and to smile and laugh – but not to sue.10
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Comments: "what Bass is doing is not what anyone had in mind when the IPR procedure was first offered as an option"
Congress seems completely oblivious to unintended consequences until it comes back to bite one of their major corporate donors. What is Bass' crime? He makes money off of IPRs? Don't infringers make $$ from IPRs too, by getting the PTO to kill patents cheaply that they would otherwise have to license at higher cost? As usual, its not just about the $, but really, who is willing to put more of it in our reps pockets to get the result they want from the "law."
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